American Eagle Outfitters, Inc. and
Retail Royalty Company v. John Zuccarini a/k/a Country Walk
Claim Number: FA0304000155178
Complainant is
American Eagle Outfitters, Inc., Warrendale, PA (“Complainant”) represented
by Kathryn E. Smith of Wood, Herron & Evans, LLP. Respondent
is John Zuccarini a/k/a Country Walk, Andalusia, PA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americaneagleoutfiters.com> registered
with Computer Services Langenbach Gmbh d/b/a Joker.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 21, 2003; the Forum received a hard copy of the
Complaint on April 24, 2003.
On
April 24, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by
e-mail to the Forum that the domain name <americaneagleoutfiters.com>
is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that
Respondent is the current registrant of the name. Computer Services Langenbach
Gmbh d/b/a Joker.com verified that Respondent is bound by the Computer Services
Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 19, 2003, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@americaneagleoutfiters.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 27, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<americaneagleoutfiters.com>, is confusingly similar to
Complainant’s AMERICAN EAGLE OUTFITTERS mark.
2. Respondent has no rights or legitimate
interests in the <americaneagleoutfiters.com> domain name.
3. Respondent registered and used the <americaneagleoutfiters.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a number of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the AMERICAN EAGLE OUTFITTERS mark (Reg. No.
1,597,199 registered on May 22, 1990), related to many products, including
clothing. Complainant also has applied and/or obtained registration in several
countries outside the U.S such as Mexico, Singapore and Japan. Complainant’s
<americaneagleoutfitters.com> domain name resolves to Complainant’s
retail website, where consumers can purchase Complainant’s apparel directly.
Respondent
registered the <americaneagleoutfiters.com> domain name December
13, 1999. Respondent is using the disputed domain name to redirect Internet
traffic to a pornographic website.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant
established in this proceeding that it has rights in the AMERICAN EAGLE
OUTFITTERS mark through registration with the USPTO and by continuous use in
commerce since 1977.
The domain name
registered by Respondent, <americaneagleoutfiters.com>, is
confusingly similar to Complainant’s mark because the disputed domain name
appropriates Complainant’s entire mark and merely omits the letter “t” from the
mark. The omission of the letter “t” does not sufficiently differentiate the
domain name from the mark with regard to Policy ¶ 4(a)(i) because Complainant’s
mark continues to be the dominant element of Respondent’s domain name. See Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>, are common
misspellings and therefore confusingly similar); see also State Farm Mut. Auto. Ins. Co. v. Try
Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding the
domain name <statfarm.com> to be confusingly similar to Complainant’s
STATE FARM mark).
The Panel finds
that Complainant established Policy ¶ 4(a)(i).
Complainant
urges that Respondent has no rights to or legitimate interests in the
mark. Respondent did not provide the
Panel with a Response in this proceeding. Thus, the Panel may accept all
reasonable allegations and inferences in the Complaint as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398
(WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless clearly contradicted by the
evidence).
Moreover, due to
Respondent’s failure to dispute the allegations in the Complaint, the Panel may
presume that Respondent lacks any rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests
in the domain name because the Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <americaneagleoutfiters.com> domain name to redirect
Internet traffic to a pornographic website. This use is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish the Complainant’s mark); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another's well-known mark to provide a link to a pornographic site is not a
legitimate or fair use).
Respondent
proffered no proof and no evidence in the record suggests that Respondent is
commonly known by AMERICAN EAGLE OUTFITERS or by the domain name, <americaneagleoutfiters.com>.
Thus, Respondent has not established rights to or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has
linked the <americaneagleoutfiters.com> domain name to a
pornographic website. The use of a domain name confusingly similar to a
registered mark to divert Internet traffic to a website with sexually explicit
content is itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Youtv, Inc. v. Alemdar, FA 94243 (Nat.
Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users
to his website for commercial gain and linked his website to pornographic
websites); see also Ty, Inc. v.
O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith).
Moreover,
Respondent is a well-known typosquatter. See Gemstar-TV Guide
International, Inc. v. John Zuccarini,
FA 115076 (Nat. Arb. Forum Sept. 3, 2002) (finding “Respondent is a
notorious typosquatter”); see also
Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000)
(finding that Respondent’s registration of names of famous people, with slight
typographical errors, was evidence of bad faith); “Typosquatting” is the
practice of registering misspellings of famous marks and linking the registered
domain names to other websites for the typosquatter’s commercial gain.
Typosquatting has consistently been recognized as evidence of bad faith
registration and use. See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors. Typosquatting is inherently parasitic
and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar.
12, 2001) (finding that Respondent acted in bad faith by establishing a pattern
of registering misspellings of famous trademarks and names).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americaneagleoutfiters.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 10, 2003.
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